UK Trademarks Act 1994 amended

Section 10 of the UK Trademarks Act spells out the three circumstances under which trademark infringement will occur:

(1)The use of a sign identical to the mark registered and used on identical goods or services;

(2)The use of:

(a) an identical sign used on similar goods/services; or

(b) a similar sign used on identical goods/services; or

© a similar sign used on similar goods/services,

provided a likelihood of confusion can be shown in these cases, and

(3) (prior to this amendment) gave a special protection to marks with a reputation and covered the use of an identical or similar sign to the registered mark on dissimilar goods/services.

The third provision was in line with the EU Trademark Directive, but a change became necessary as a result of certain recent ECJ judgments, which established that member states which chose to adopt the directive in relation to marks with a reputation, had an obligation to provide protection, so as to cover not only dissimilar goods, but also identical or similar goods.

With the amendment to Section 10(3) of the Act, the test for trademark infringement has widened in its scope.